Other Barks & Bites for Friday, August 5: Win for AbbVie at Seventh Circuit; Eleventh Circuit Affirms Ruling for Monster Energy; and Ninth Circuit Reverses Fair Use Finding in Death Valley Lake Photo Case

Bite (noun): more meaty news to sink your teeth into.

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https://depositphotos.com/59960165/stock-photo-dog-beach-chair.htmlThis week in Other Barks & Bites: Senators Thom Tillis and Patrick Leahy introduce a bill to improve patent examination and quality, while Tillis’ office also releases a draft bill on Section 101 patent eligibility; the Ninth Circuit reverses a district court’s summary judgment ruling that the unauthorized use of photos of a lake in Death Valley was a fair use; Amazon will acquire robotics firm iRobot for $1.7 billion; the Seventh Circuit nixes antitrust claims against AbbVie after finding nothing improper with the company’s large number of patents covering Humira; the Eleventh Circuit affirms a lower court’s decision to strike an actual damages claim in a trademark case against Monster Energy as a discovery sanction; the bipartisan PLAN for Broadband Act is introduced to develop a cohesive national strategy for broadband infrastructure; and the USITC begins a formal enforcement proceeding against The Chamberlain Group after finding violations of Section 337 for patent infringement.


Bipartisan PLAN for Broadband Act Introduced by Sens. Wicker, Luján – On Thursday, August 4, Senators Roger Wicker (R-MS), Ben Ray Luján (D-NM), Tim Walberg (R-MI) and Peter Welch (D-VT) introduced the Proper Leadership to Align Networks (PLAN) for Broadband Act into the U.S. Senate. If enacted, the bill would direct the President to develop a national strategy for broadband infrastructure across America to counteract the fragmented nature of federal efforts to improve broadband access to United States citizens.

Tillis Issues Patent Eligibility Bill Draft, Joins Leahy to Introduce Patent Quality Act – On Wednesday, August 3, the office of Senator Thom Tillis (R-NC), the Ranking Member of the Senate IP Subcommittee, released a first draft of the Patent Eligibility Restoration Act, which would expressly overrule the U.S. Supreme Court’s patent eligibility decisions in Association for Molecular Pathology v. Myriad Genetics (2013) and Mayo Collaborative Services v. Prometheus Laboratories (2012). The previous day, Senator Patrick Leahy (D-VT), the Senate IP Subcommittee’s Chair, joined Tillis in introducing the Patent Examination and Quality Improvement Act of 2022, which directs the U.S. Comptroller General to submit a report to Congress recommending improvements to patent examination processes ongoing at the U.S. Patent and Trademark Office.

Ninth Circuit Finds No Fair Use Defense for Online Article Using Death Valley Lake Photos – On Wednesday, August 3, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in McGucken v. Pub Ocean Ltd. in which the appellate court reversed the Central District of California’s sua sponte grant of summary judgment to Pub Ocean on McGucken’s copyright infringement claims involving Pub Ocean’s unauthorized use of photos of a lake that formed in Death Valley in March 2019. The Ninth Circuit found that all of the fair use factors weighed against a determination that Pub Ocean’s unlicensed use of the photographs were transformative.

Eleventh Circuit Affirms Striking Actual Damages Claim Against Monster Energy – On Wednesday, August 3, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Vital Pharmaceuticals, Inc. v. Monster Energy Co. in which the appellate court affirmed a ruling striking Vital’s claim for actual damages and its demand for a jury trial over Vital’s failure to reveal its methodology for actual damages on Monster’s sales of an energy drink allegedly infringing Vital’s trademarks. The Eleventh Circuit denied Monster’s cross-appeal seeking attorneys’ fees and double costs for Vital’s allegedly frivolous appeal.

Copyright Office Suggests Alternatives to DRE Would Better Achieve Copyright Policies – On Tuesday, August 2, the U.S. Copyright Office issued a report to Senator Thom Tillis detailing the agency’s findings resulting from a study into the feasibility of a deferred registration examination (DRE) option for copyright registration applicants. The Office concluded that not only would a DRE option frustrate policy goals related to judicial efficiency and the public record, but also found that the agency’s current modernization efforts would result in improvements to the fee structure for copyright applicants and other goals being sought by proponents of the DRE option.

Eighth Circuit Says Single Sale of T-Shirt Doesn’t Establish Personal Jurisdiction for Trademark Suit – On Tuesday, August 2, the U.S. Court of Appeals for the Eighth Circuit issued a ruling in Brothers and Sisters in Christ, LLC v. Zazzle, Inc. in which the appellate court affirmed the district court’s dismissal of a trademark lawsuit for lack of personal jurisdiction. The Eighth Circuit ruled that the sale of a single T-shirt with an allegedly infringing “love happens” logo to a resident in Missouri, without any other allegations of Zazzle’s contacts with Missouri related to the trademark infringement claims, did not establish sufficient contacts within the Eastern District of Missouri.

Seventh Circuit Finds Nothing Wrong With AbbVie’s Trove of Humira Patents – On Monday, August 1, the U.S. Court of Appeals for the Seventh Circuit issued a ruling in Mayor and City Council of Baltimore v. AbbVie Inc. in which the appellate court affirmed a district court’s ruling that the 132 patents owned by AbbVie and covering its blockbuster inflammation treatment Humira did not constitute a “patent thicket” violating the Sherman Antitrust Act.

Second Circuit Reverses Dismissal of False Advertising Claims on Building Code Compendium – On Friday, July 29, the U.S. Court of Appeals for the Second Circuit issued a decision in International Code Council, Inc. v. UpCodes Inc. in which the appellate court found that the Southern District of New York erred by sua sponte converting pre-motion letters from both parties into a motion to dismiss and a response and then granting the motion to dismiss Lanham Act claims for false advertising filed against UpCodes. The Second Circuit found that International Code Council (ICC) adequately pled both falsity and materiality of UpCodes statements as to the accuracy and up-to-date nature of state and local building codes based on ICC’s model codes and sold by UpCodes.


EUIPO Launches API Platform for Trademark Registration, New EUTM Filing Form – On Wednesday, August 3, the European Union Intellectual Property Office (EUIPO) announced that it had officially launched an application programming interface (API) platform enabling frequent trademark registration filers to integrate their in-house enterprise IP management solutions for easier trademark filings. As well, the EUIPO published a new online form for EU trademark filings that is both customizable, provides better data security and includes contextual help guides.

Major Record Labels Settle Copyright Disputes With Charter Communications – On Tuesday, August 2, joint notices of resolution were filed in a pair of lawsuits ongoing in the District of Colorado to terminate cases involving allegations of copyright infringement against Charter Communications filed by major record labels Universal Music Group, Sony BMG and Warner Records.

USPTO Seeks Public Input on PCT Patent Application Information Collection – On Tuesday, August 2, the U.S. Patent and Trademark Office (USPTO) issued a notice in the Federal Register seeking public comments on the information collected by the agency from members of the public submitting patent applications under the Patent Cooperation Treaty (PCT) for subsequent filings in foreign patent offices. The USPTO will be accepting public comments on this information collection until October 3.

Liberty Tax Sues AMC Over Fictional “Better Call Saul” Tax Logo – On Monday, August 1, tax preparation chain Liberty Tax Service filed a lawsuit in the Southern District of New York alleging claims of trademark infringement against AMC Networks and other entities involved in producing the television show “Better Call Saul” over a Statue of Liberty logo used in conjunction with a fictional tax service on the show.

Nevro Receives $85M in Medical Device Patent Settlement With Boston Scientific – On Monday, August 1, California-based medical device firm Nevro announced that it had reached an agreement with rival firm Boston Scientific to settle ongoing patent litigation between those two firms with mutual non-exclusive licenses to patents asserted by either party. The settlement also includes a net payment of $85 million from Boston Scientific to Nevro. 

USITC Institutes Enforcement Proceeding Against Chamberlain Group’s Movable Barriers – On Monday, August 1, the U.S. International Trade Commission (USITC) announced that it had determined to institute a formal enforcement proceeding against The Chamberlain Group after a request for such proceedings by Overhead Door Corporation following the agency’s entry this February of a limited exclusion order and cease-and-desist order for Section 337 violations committed by Chamberlain Group in importing certain movable barriers infringing upon Overhead Door’s patents into the U.S. for sale.

Judge Donato Nixes YouTube’s MTD on Copyright Claims Over Content ID – On Monday, August 1, U.S. District Judge James Donato of the Northern District of California entered an order denying YouTube’s motion to dismiss a lawsuit alleging claims of copyright infringement on behalf of a class of “ordinary [copyright] owners” led by Grammy-award winning composer Maria Schneider, who allege that YouTube’s Content ID system to police copyright policy is only made available to major studios and recording companies.

Copyright Office Expands Public Access to Electronic Recordation System – On Monday, August 1, the U.S. Copyright Office announced that any member of the public is now able to access the agency’s Electronic Copyright System (ECS) through a Login.gov account for electronic submissions of recordations of transfers and other documentation submitted to the Office under 17 U.S.C. § 205.

This Week on Wall Street 

Amazon to Purchase iRobot in All-Cash Transaction Valued at $1.7B – On Friday, August 5, e-commerce giant Amazon.com announced that it had entered into an agreement to acquire consumer robotics firm iRobot for $61 per share in a cash transaction that values iRobot at about $1.7 billion.

Toyota Earnings Show Worse Than Expected Profits Slump During Q1 2022 – On Thursday, August 4, Japanese motor company Toyota issued its earnings report for the first quarter of 2022 showing that the company only earned profits of 578.66 billion yen ($4.3 billion USD) during the quarter, a 42 percent drop from the same period in 2021’s fiscal year. Financial analysts were expecting a 15 percent year-over-year decrease in profits for the car company, which is facing higher material prices along with the global chip shortage.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2020 rank in parentheses):

  • Monday: Bridgestone Corp. (t-277th); Nippon Telegraph and Telephone Corp. (t-102nd); Softbank Group Corp. (76th); Tokyo Electron Ltd. (96th); Xperi Holding Corp. (104th)
  • Tuesday: Continental AG (98th); Dolby Laboratories, Inc. (232nd); Japan Display Inc. (119th); Mazda Motor Corp. (t-174th); Olympus Corp. (82nd); Terumo Corp. (t-246th)
  • Wednesday: Baidu, Inc. (99th); Fujifilm Holdings Corp. (25th); Hon Hai Precision Industry Co. (t-197th); Honda Motor Co., Ltd. (30th); LG Corp. (3rd); Toshiba Corp. (35th); The Walt Disney Co. (t-183rd)
  • Thursday: Deutsch Telekom AG (108th); Siemens AG (38th)
  • Friday: None


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